The opposition battleground

As regular readers of this blog now know very well, the recently enacted loi PACTE authorized the government to rule by way of an ordonnance in order to set up a procedure for third parties to oppose a granted patent in France.

This is of course a major change and an exciting development for patent professionals, in particular patent attorneys – but also INPI examiners.

I have had the privilege to work with them over the past few months as part of an opposition training program, and I must say that it has been a real pleasure. They are very well aware of the various challenges that they will face, but also enthusiastic and eager to get into it all.

A draft of the ordonnance as well as of the implementing rules (décret) has been released on November 22. It is in the process of being dissected and commented upon by various professional associations. Just like in my previous post on the draft provisions regarding utility certificates and provisional applications, there may be some changes in the final version. But we now probably have a pretty good idea of what the system will look like.

Ready for battle?

One convenient way to look at it is to break down the various provisions into two groups: those which are identical to EPO opposition proceedings, and those which are different, or which are specific to French opposition proceedings.

Oh, and I have focused on the main points only.

As an initial warning, whenever I refer to the INPI in the following, it is in fact the Director of the INPI who is formally mentioned in the draft. French law  peculiar: it is drafted as if the head of the patent office were the only person working on cases and issuing decisions…

Let’s start with the familiar waters of EPO-like provisions:

  • The time limit for filing an opposition is 9 months from the publication of the mention of grant of the patent. There can be no restoration of right with respect to this time limit, if the would-be opponent misses it.
  • Any person can file an opposition. In other terms, no standing is required, and straw man oppositions are allowed.
  • Parties must be represented by a patent attorney or an attorney at law if they reside outside of the European Economic Area.
  • The grounds for opposition will be extension of subject-matter, insufficiency of disclosure, lack of novelty, lack of inventive step, and the various sorts of exclusion from patentability / exception from patentability.
  • The opposition can be filed against all claims or only some of them.
  • The notice of opposition must comprise the identity of the opponent, the reference of the opposed patent, a statement of grounds, facts and evidence, the justification that the opposition fee has been paid (the amount of this fee has not been published yet) and optionally the appointment of a representative.
  • If the notice of opposition is defective, the opponent gets an opportunity to regularize its filing, but this needs to be done within the 9-month deadline (except for the appointment of the representative). Otherwise, the opposition is rejected as inadmissible.
  • If several oppositions are filed against the same patent, they are joined into a single opposition procedure.
  • The opposition proceedings comprise a written phase and an oral phasei.e. oral proceedings are summoned upon request of at least one party or upon decision of the INPI itself.
  • The opposition procedure is adversarial – there is thus a right to be heard for each party at every step of the procedure.
  • During the opposition proceedings, the patent proprietor may modify the claims of the patent to address a ground for opposition (but please note that the current draft specifies: a ground for opposition raised by the opponent, which is more restrictive than R. 80 EPC).
  • Of course, any amendment filed during opposition must not introduce any extension of subject-matter, nor any extension of the scope of protection. The amended claims must comply with the requirements of clarity and sufficiency of disclosure (let’s see whether the INPI adopts the same approach as G 3/14).
  • The decision on the opposition has retroactive effect back to the filing date of the patent.
  • If the patent is amended, a new patent document is published, once the decision has become final.

Let’s then turn to those provisions which are so French:

  • Oppositions can be filed not only against patents but also against utility certificates. However, SPCs cannot be opposed.
  • The timeline of the opposition proceedings is slightly different.
    • First the patentee is invited to reply to the opposition, with a deadline prescribed by the INPI (and thus not set in the draft provisions).
    • Then, the INPI sends a preliminary opinion on the case within a 2-month deadline from the expiry of the patentee’s response deadline.
    • This preliminary opinion is communicated to the parties, who are invited to file written submissions within a prescribed deadline.
    • If at least one party files written submissions at this stage, the other parties are invited to file a response within a prescribed deadline.
    • Parties are optionally summoned to oral proceedings.
    • Finally the INPI issues its decision.
  • The opposition is deemed rejected if the INPI fails to issue a decision within 3 months from the closure of the examination of the opposition. Said closure takes place either when a deadline to file observations expires, if the parties fail to file observations or request oral proceedings; or at the latest on the day of the oral proceedings.
  • Not only the scope, but also the reasons for the opposition cannot be extended after the expiry of the opposition time limit.
  • There is no equivalent to art. 105 EPC, i.e. no possible intervention of an alleged infringer after the 9-month deadline.
  • The opposition is stayed in case of claim for ownership of the patent in front of the Paris TGI, or if a claim for revocation is pending in front of a court when the opposition is filed, or if the INPI is waiting for information relevant to the opposition or the situation of the parties, or if all parties request so (for a maximum duration of four months, renewable once). This latter provision will be useful in case the parties are in a negotiation process.
  • There are four possible outcomes of the opposition proceedings: rejection of the opposition, maintenance of the patent in amended form, full revocation. And the fourth one is: partial revocation. In other terms, the INPI will look at all of the challenged claims one by one and may decide that some of them are invalid and others are valid. In that case, only the invalid claims will be revoked. This stands in sharp contrast with the EPO practice of looking only at a set of claims as a whole, a single defect in the set meaning that it has to go down completely.
  • In case of a partial revocation, the patent proprietor will be requested to provide a modified set of claims complying with the partial revocation. The modified set of claims is refused if it is not compliant.
  • The INPI may not continue the opposition proceedings in case all opponents have withdrawn their oppositions, or in case the patent has ceased to be in force.
  • An examiner having examined the patent application may not work on the opposition, but he or she can be heard during the opposition proceedings.
  • A request for limitation is inadmissible if filed when an opposition is pending. If a limitation procedure is ongoing when an opposition is filed, the limitation procedure is closed. But there is an exception if the request for limitation is in the context of a nullity suit.
  • Upon request of the winning party, the losing party is ordered to pay part or all of the costs of the winning party, within the boundaries of an official fee schedule (to be determined).
  • An appeal against the opposition decision can be filed in front of the Paris Cour d’appel within a one-month deadline from the communication of the decision. The statement of grounds of appeal needs to be filed within a three-month deadline from the notice of appeal. The defendant has a three-month deadline from the communication of the grounds of appeal to file its reply brief and possibly a counter-appeal. The parties will need to act through an attorney at law.
  • Third parties may intervene in these appeal proceedings, either in a voluntary or forced manner. Normal rules of civil procedure will apply here.
  • The court re-judges the entire case, in fact and in law. It is explicitly stated that the parties can file further grounds, evidence and arguments relative to the first instance. This does not extend to new requests, in the general sense of the term (“prétentions“), unless they are related to an intervention on appeal, occasioned by a new fact, or have the same aim as those filed in first instance, even on different legal grounds.
  • All deadlines on appeal are extended by one month for parties residing in French overseas territories and by two months for parties residing abroad.
  • The INPI will not be a party to the appeal proceedings. But it gets the opportunity to make written or oral submissions.
  • After the appeal ruling, the parties can file an appeal on points of law in front of the Cour de cassation. The INPI can also file such a cassation appeal.
  • There is an estoppel principle: a claim for nullity of a patent is inadmissible if a final decision on an opposition having the same object and the same cause has already been issued between the same parties.

This is a lot to process, and it is actually unfortunate that stakeholders have been given only something like two weeks and a half to provide their comments.

This new opposition procedure is a major development, and many provisions may have unforeseen consequences which it would be good to have time to think about.

So far, I have heard colleagues wonder or worry about two points in particular.

One is the automatic rejection of the opposition if the INPI does not issue its decision in due time.

This is one of those so-called SVR (“silence vaut rejet“) provisions that popped up everywhere a few years ago. Such automatic rejection would of course be highly unfair to the opponent.

However, I am not excessively preoccupied. We already have to live with SVR deadlines, and I am certain that the INPI will do whatever it takes not to fall into the trap of an automatic rejection. Besides, we are actually lucky that the SVR deadline is computed from the closure of the examination of the opposition: thus, the INPI will have the complete submissions at hand and can work on its decision within the deadline. It would have been much riskier if the SVR deadline had been computed, say, from the filing of the opposition – regardless of the number and timing of the parties’ submissions.

Another point that has everyone gossiping is the role of the INPI on appeal.

Indeed, the INPI can make submissions. If they make use of this right, it means that they will necessarily side with one party or the other. Besides, they even have the right to file a cassation appeal once the appeal decision has been issued. Isn’t it strange for the patent office to first have to act as an impartial arbitrator between the parties and then become a quasi-party or an actual party to the proceedings at a later stage?

Like my colleagues, I also have questions of my own.

For instance, will the INPI apply EPO-like standards or rather French court standards when examining oppositions?

I am not talking here about the problem and solution approach or about the gold standard, because I do not believe that there is a huge difference between Munich and Paris in this respect. I am mainly talking about claim interpretation. On this particular topic, the EPO and French courts could not be further apart.

The many differences between the proceedings in front of the INPI and at the appeal stage also raise some concerns.

For instance, there can be no intervention in first instance, but there can be on appeal. Furthermore, as far as I understand, the opponent will be severely limited in terms of any new objections that it may come up with in first instance, after the expiry of the 9-month time limit; but new objections, on the other hand, may be allowed on appeal. Isn’t this contradictory?

Once we have the final provisions in front of us, there will be a lot of strategic planning to make, both in terms of patent drafting (think about this notion of partial revocation, which is certainly an incentive to have as many validity fallbacks in a granted patent as possible) and in terms of freedom-to-operate / litigation.

To be continued, for sure!

Divide and not conquer

Many decisions that I have commented on relate to complex cases, involving multiple patents, or various actions in front of different courts, or endless back and forth bouncing between the Cour de cassation and the Cour d’appel.

So I am grateful, that, just this once, the mailman has delivered a short decision on a relatively simple legal point.

On March 21, 2008, Kubota Corporation filed a French patent application on a lawn mower, published as FR2915847.

On April 22, 2015, they filed a first divisional patent application, published as FR3019966.

On March 1, 2018, they filed a second divisional patent application. However, on August 27, 2018, the INPI (French patent office) refused this second divisional application as inadmissible.

The reason for the refusal was that the second divisional application was filed after the fee for grant for the grandparent application (FR’847) had been paid, back in April 2015.

Indeed, the INPI Guidelines for examination recite the following (section B.III.2):

A division can only be requested until the date of payment of the fee for grant and printing for the initial application. When this fee has already been paid or when the grant procedure has ended because of a refusal, withdrawal or lapse of the initial application, the division is refused. […]

When the division relates to a divisional application (B) stemming from an initial application (A), this control concerns application (A), and not divisional application (B)

French practice therefore differs from EPO practice.

At the EPO, you may file a second generation divisional application as long as the first generation divisional application is still pending, even if the grandparent application has already proceeded to grant. This is not possible according to the INPI guidelines.

Kubota filed an appeal against the refusal with the Paris Cour d’appel. They challenged the INPI’s interpretation of the statute.

The provision at stake is article R. 612-34 of the Code de la propriété intellectuelle:

Until the payment of the fee for grant and printing of the patent, the applicant may, on its own initiative, file divisional applications of its initial patent application. 

The key issue is how to understand to which application the time limit refers. The INPI’s position is that it is the original application in the family; whereas the appellant’s position is that it is rather the application from which a division is filed.

In this case, the fee for grant and printing for the first divisional application (FR’966) was paid on March 7, 2018, i.e. after the filing of the second divisional application at stake here – so that the filing would be admissible under the appellant’s interpretation of R. 612-34.

The court sided with the INPI on this interpretation issue.

First, they made reference to article L. 612-4:

The patent application can only relate to one invention or a plurality of inventions which are related so as to form a single general inventive concept. 

Any application not meeting the requirements of the previous paragraph must be divided within the statutory deadline; divisional applications benefit from the filing date and optionally priority date of the initial application

Thus, the court concluded that the “initial application” is the first one in the family – the one that defines the filing and priority dates for the entire family.

Second, the court stated that, in article R. 612-34, the term “patent” (cf. “until the payment of the fee for grant and printing of the patent”) refers to the same IP right as the “initial patent application” (cf. “may […] file divisional applications of its initial patent application“).

Ergo, the time limit condition applies to the payment of the fee for grant and printing in connection with the original application in the family.

In its submissions, Kubota made reference to articles L. 612-12-3 and L. 613-25 which prohibit extension of subject-matter in a divisional application, beyond the content of the “initial application as filed“. But the court was not convinced, noting that, precisely, this prohibition applies to a comparison with the original application in the family.

The court also remained insensitive to a comparison with other patent offices having a different practice: “the harmonization objective relates to the principle of the ability to divide a patent application, not the modalities of this division”.

All in all, the court’s position does not appear unreasonable. But is it compelling?

This lawn mower looks skeptical about the appeal decision.

Let’s take a step back. Article R. 612-34 does not strike me as being crystal clear. I suspect that this may be because its drafters did not have in mind the case of cascading divisional applications, i.e. divisional applications of divisional applications.

Furthermore, both main points of the court’s reasoning could potentially be challenged.

Starting with the second point in the court’s reasoning, how can we be certain that the term “patent” and the term “initial patent application” in R. 612-34 relate to one and the same thing? After all, they are not the same terms.

And then, going back to the first point, the court referred to L. 612-4 and concluded that the term “initial patent application” refers to the original application in the family.

But: 1, even if this is the case, the term “initial patent application” may or may not have been used perfectly consistently in the Code de la propriété intellectuelle; where is the evidence that it has exactly the same meaning in R. 612-34? And 2, “initial patent application” in L. 612-4 could also be interpreted as relating to the (immediate) parent application based on which the division is performed. It is true, that ultimately, the same filing date / priority date applies to the entire family, but in the case of cascading applications, it could simply be because the filing date of the “initial” application (meaning the parent application) is itself defined by reference to the filing date of its own “initial” application (meaning the grandparent application). A transitive definition, if you will.

Again, article R. 612-34 recites that “the applicant may, on its own initiative, file divisional applications of its initial patent application“. On the face of it, isn’t the “initial patent application” in this provision the one based on which the division is made, i.e. the immediate parent?

If so, we would come to the conclusion that:

  • Either it is only possible to file a divisional application based on the original application, i.e. cascading or second generation divisional applications are not allowed.
  • Or else, cascading applications are allowed, and the time limit in R. 612-34 applies to the previous application in the cascade, not to the source of the cascade.

In turn, if the above reasoning is correct, then this means that the INPI’s position that has just been validated by the court (cascading divisional applications are OK but the time limit applies to the original application) is contradictory.

In fact, on a practical standpoint, what is the point in allowing cascading divisional applications if you can only file a divisional application when the original application in the family is still pending? This is rather useless, and you may as well decide that only divisional applications stemming from the original application are possible.

As a final and important remark, the court acknowledged in passing that the INPI’s practice prior to 2011 was different, but added that this does not matter.

Well, does it not? I am quite curious about this. Do readers have any information to share about this change of practice and what caused it? Article R. 612-34 has been here and has not been modified since 1995.

Now that it is time to finish this post, I am left with the impression that even simple legal points are not necessarily straightforward.

Let’s see if there is a cassation appeal, and if so, what the court will make of this.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, November 22, 2019, Kubota Corporation v. Directeur Genéral de l’INPI, RG No. 18/27433.